Unfair Competition by Publicizing a Pending Infringement Action

Both ip fray and JUVE Patent have recently reported on the decision of the Tribunal des Activités Économiques de Lyon (available here) awarding bioMérieux SA €10,000, after Qiagen N.V. published a press release concerning Qiagen’s having filed a patent infringement suit against bioMérieux in the Düsseldorf Local Division of the UPC.  Since the topic of whether, or under what circumstances, an IP owner may be found liable for disparagement (and/or in violation of unfair competition or other law) for accusing another firm of infringement is one of the topics I address in my forthcoming book Wrongful Patent Assertion, I thought I should say something about this decision, which highlights some of the risks posed under the relevant French law.  

As I discuss in the book, France is hardly the only country in which IP owners need to be careful about sending warning letters, especially when the recipient of the latter is an alleged “secondary infringer” (i.e., a customer, distributor, or supplier of an alleged “primary infringer,” that is, an alleged infringing manufacturer).  The U.K., for example, has a statutory cause of action known as “unjustified threats” that is intended to protect secondary infringers from groundless threats of infringement liability; and there is also a rather complex body of German decisions differentiating between permissible inquiry letters and potentially impermissible warning letters.  (For detailed discussion, see Minyu Zheng, Legal Responses to Unjustified Threats of Patent Infringement – Intellectual Property Approach or Unfair Competition Approach? (Edward Elgar Publ. 2024), previously noted on this blog here.)  On the other hand, it is extremely difficult to win such cases in the U.S., in part because of perceived First Amendment protections.

More relevant here, previous French caw law has found that it also can be a violation of unfair competition law to publicize a pending action, at least prior to the rendering of a first instance judgment. To illustrate, consider this 2004 Cour de cassation decision holding that Défi France had violated unfair competition law by reporting its own pending (and ultimately successful) unfair competition lawsuit, against a firm called LVP partner’s, to Défi France’s client Nissan.  The recent decision of the Lyon court seems consistent with this earlier case, in finding that the publication of the press release can constitute dénigrement (disparagement) and unfair competition.  The decision states, inter alia, that the press release informed the technical sector and the general public of the filing of the complaint, “without communicating any data as to the context and the nature of the facts giving rise to the dispute,”  apart from any adversarial proceeding and in the absence of  any judicial decision, in relation to a patent in a very sensitive field in the health care sector (my translation from the French).  The court awarded damages as noted above; ordered Qiagen not to make further public comments about the case prior to a judicial decision; and ordered Qiagen to post the Lyon court’s decision on its own website.  As the above commentators suggest, this aspect of French law may not be well-known to companies outside of France, and questions may still remain regarding exactly how to comply with French law while also satisfying obligations to keep one’s own shareholders informed of material information.